DCT
1:17-cv-00704
Express Mobile Inc v. Icreon Tech Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Express Mobile, Inc. (Delaware)
- Defendant: Icreon Tech, Inc. (Delaware)
- Plaintiff’s Counsel: Devlin Law Firm LLC; Brent Coon & Associates, P.C.
- Case Identification: 1:17-cv-00704, D. Del., 06/09/2017
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because the Defendant is a corporation organized and existing under the laws of Delaware.
- Core Dispute: Plaintiff alleges that Defendant’s use of website building platforms, namely Magento and Wordpress, to create websites for its customers infringes patents related to browser-based website generation tools and runtime engines.
- Technical Context: The technology concerns software tools that enable users to create and deploy interactive, database-driven websites through a web browser interface, a foundational technology for modern content management systems and e-commerce platforms.
- Key Procedural History: The complaint notes that the asserted patents survived a motion for judgment on the pleadings in a separate case in the Eastern District of Texas, where a Magistrate Judge found the claims "address a problem particular to the internet: dynamically generating websites" and were not "merely do-it-on-a-computer claims." This finding, while not binding in the present case, may inform early motion practice regarding patent eligibility. The complaint also alleges that Defendant was notified of the patents-in-suit via correspondence on October 30, 2015.
Case Timeline
| Date | Event |
|---|---|
| 1999-12-02 | Priority Date for ’397 Patent and ’168 Patent |
| 2003-04-08 | U.S. Patent No. 6,546,397 Issues |
| 2009-09-22 | U.S. Patent No. 7,594,168 Issues |
| 2015-10-30 | Plaintiff Notifies Defendant of Alleged Infringement |
| 2017-06-09 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,546,397 - Browser Based Web Site Generation Tool and Run Time Engine, issued April 8, 2003
The Invention Explained
- Problem Addressed: The patent describes conventional website construction tools of the late 1990s as cumbersome, requiring technical expertise in HTML and scripting languages, and being largely incapable of producing highly interactive or dynamically scalable web applications directly within a browser (’397 Patent, col. 1:10-44).
- The Patented Solution: The invention proposes a browser-based system where a user interacts with a visual "build tool" to design a website. This tool separates the website's content and structure into discrete "objects" and stores their properties (e.g., style, position) in a database. A separate "run time engine" is then generated, which reads the information from the database to construct and display the final, interactive website on the end-user's browser. This architecture abstracts the complexity of coding from the user and shifts from a static page-generation model to a dynamic, database-driven one (’397 Patent, Abstract; col. 5:1-11; Fig. 2).
- Technical Importance: The technology aimed to democratize web development by replacing manual coding with a visual, object-oriented interface, enabling the creation of richer, more application-like websites without extensive programming knowledge (’397 Patent, col. 2:50-65).
Key Claims at a Glance
- The complaint asserts independent claims 1 (a method), 2 (an apparatus), and 37 (an apparatus), as well as numerous dependent claims (Compl. ¶19).
- Independent Claim 2 (Apparatus) includes the following essential elements:
- An apparatus for producing websites on a computer having a browser and a virtual machine.
- An interface to present a settings menu through the browser, where settings correspond to commands for the virtual machine.
- A browser to generate a display according to the selected settings.
- A database for storing information about the selected settings.
- A "build tool" with "run time file(s)" that use the stored database information to generate commands for the virtual machine to display the web page(s).
- Independent Claim 37 (Apparatus) is similar but further requires:
- An "internal database" associated with the authoring interface.
- An "external database" containing corresponding data for use by the runtime files to generate the website.
U.S. Patent No. 7,594,168 - Browser Based Web Site Generation Tool and Run Time Engine, issued September 22, 2009
The Invention Explained
- Problem Addressed: As a continuation of the '397 patent, this patent also addresses the limitations of traditional web authoring in creating dynamic websites, with a particular focus on applying complex styling and animations (’168 Patent, col. 1:46-56).
- The Patented Solution: The invention describes a server-based system where a "build engine" allows a user to associate specific "styles"—including "transformations and time lines" (i.e., animations)—with website objects like buttons and images. It specifies that the system produces a "database with a multidimensional array" that stores the object data, style information, and page structure. A runtime engine then uses this structured database to generate the final website for a web browser (’168 Patent, Abstract; col. 2:32-47).
- Technical Importance: The invention provided a structured framework for defining and applying dynamic visual effects and animations to website components, moving beyond static styling to create more engaging user experiences through a database-driven model (’168 Patent, col. 2:57-65).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 2-6 (Compl. ¶84).
- Independent Claim 1 (System) includes the following essential elements:
- A system with a server and a "build engine" for assembling a website from objects (e.g., buttons, images).
- The server accepts user input to associate a "style" with objects, where the style includes values for "transformations and time lines."
- Each web page is "defined entirely" by these objects and their associated styles.
- The system produces a "database with a multidimensional array" containing the object and style data.
- This database is provided to a server accessible to a web browser, which uses a "runtime engine" to generate the website from the database contents.
III. The Accused Instrumentality
Product Identification
- The complaint identifies the accused instrumentalities as the website building tools used by Defendant, specifically "all versions of Magento Enterprise Edition and all versions of Wordpress" (Compl. ¶19).
Functionality and Market Context
- The complaint alleges Defendant uses these platforms to build websites for its customers (Compl. ¶20). The platforms function as browser-based authoring tools where a user interacts with a server-side dashboard and a visual, WYSIWYG (What You See Is What You Get) editor (Compl. ¶22).
- Users can select elements (images, text), define their properties (font, color, layout), and see the changes reflected in the editor (Compl. ¶22). These user-selected settings are stored in a database (Compl. ¶7). The platforms then generate the final website by using runtime files (such as PHP, JavaScript, and CSS) that retrieve the stored information from the database and generate HTML to be rendered in an end-user's browser (Compl. ¶7).
- The complaint alleges that Defendant is a for-profit organization and that its use of these tools gives it a competitive advantage in the marketplace (Compl. ¶20).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
'397 Patent Infringement Allegations
| Claim Element (from Independent Claim 2) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An apparatus for producing websites... comprising: an interface to present a settings menu which describes elements... presented through a browser | Defendant uses Magento and Wordpress, which provide a browser-based dashboard and store-builder tool with selectable menus for managing products and applying styles. | ¶24 | col. 66:5-10 |
| where the selectable setting(s) corresponds to commands to the virtual machine | User settings are translated into HTML and JavaScript, which the complaint asserts are "virtual machine commands" that are interpreted and executed by the browser's engine. | ¶24 | col. 66:11-13 |
| a browser to generate a display in accordance with selected setting(s) | The accused platforms include a WYSIWYG editor that updates the display "substantially contemporaneously" to show the results of user selections, such as text alignment or font changes. | ¶24 | col. 66:14-16 |
| a database for storing information regarding selected settings | User selections for layout, image filenames, thumbnails, and text color are stored in a database. | ¶¶24, 10 | col. 66:17-18 |
| and a build tool having run time file(s) for generating web page(s) and using stored information to generate commands to the virtual machine... | The accused platforms allegedly use runtime files (PHP, JavaScript, PHTML, XML) that retrieve data from the database to generate the final HTML, which acts as commands for the browser's engine. | ¶¶24, 7 | col. 66:19-24 |
- Identified Points of Contention:
- Scope Questions: A central dispute may arise over the meaning of "virtual machine." The complaint asserts that modern browser JavaScript engines meet this definition (Compl. ¶22). The court will have to determine if this term, from a patent filed in 1999, should be construed so broadly or if it was intended to refer to more specific technologies of that era, such as the Java Virtual Machine.
- Technical Questions: The complaint's infringement theory posits that HTML code itself constitutes "virtual machine commands" (Compl. ¶7). A question for the court is whether the indirect process of generating markup language (HTML) that is subsequently interpreted by a browser aligns with the claim's requirement of a run time file "generat[ing] virtual machine commands."
'168 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A system for assembling a website comprising a server with a build engine... the website comprising web pages with objects... | Magento and Wordpress are server-based systems that function as build engines, allowing users to create web pages composed of objects like buttons and images. | ¶85 | col. 64:58-62 |
| the server accepting user input to associate a style with objects, wherein a button or image object is associated with a style that includes values defining transformations and time lines | The accused platforms allegedly use CSS libraries, CSS-animations, and CSS-transitions, which enable users to apply styles that function as the claimed "transformations and time lines." | ¶¶85, 95 | col. 64:63-67 |
| wherein each web page is defined entirely by the objects and the style associated with the object | The complaint alleges this limitation is met through a combination of features (Compl. ¶86) but does not specify how the platforms' underlying template and core code are excluded from the definition. | ¶86 | col. 65:1-2 |
| produce a database with a multidimensional array comprising the objects... including data defining the object style, number, and... page... | The complaint alleges that JSON strings used by the platforms reflect a multidimensional array structure, and that CSS files store data defining object styles and the page to which they apply. | ¶¶87, 88 | col. 65:3-7 |
| provide the database to a server accessible to web browser; wherein the database is produced such that a web browser with access to a runtime engine is configured to generate the website... | The systems provide database content to the end-user's browser via runtime files (HTML, CSS, JS), and the browser then acts as the runtime engine to generate the final website. | ¶¶85, 89 | col. 65:8-13 |
- Identified Points of Contention:
- Scope Questions: The court will need to address whether a relational database combined with structured data formats like JSON, as alleged in the complaint (Compl. ¶87), satisfies the claim limitation of "a database with a multidimensional array."
- Technical Questions: The requirement that a web page be "defined entirely by the objects and the style" presents a significant factual question. It is unclear what evidence the complaint offers to show that pages built on complex platforms like Magento and Wordpress, which rely on extensive core theme and plugin files, meet this exacting "entirely" limitation.
V. Key Claim Terms for Construction
The Term: "virtual machine" (’397 Patent, cl. 2)
- Context and Importance: The viability of the infringement allegations against modern web platforms hinges on this term's scope. Practitioners may focus on this term because the complaint's theory requires equating a standard browser JavaScript engine with a "virtual machine" (Compl. ¶22), a construction that may be contested based on the technology available when the patent was filed.
- Intrinsic Evidence for a Broader Interpretation: The specification discusses a "run time engine" that processes commands to create a dynamic display, a functional description that could be argued to apply to any sandboxed code interpreter, including a modern JS engine (’397 Patent, col. 2:1-5).
- Intrinsic Evidence for a Narrower Interpretation: The specification frequently refers to "JAVA," "JAVA Applet," and "JAR" files, suggesting the inventor may have contemplated a more specific technology like the Java Virtual Machine, which was distinct from the browser's native script interpreter at the time (’397 Patent, col. 1:53-57, col. 2:56-61).
The Term: "internal database" / "external database" (’397 Patent, cl. 37)
- Context and Importance: Infringement of claim 37 requires proving a specific two-database architecture. The complaint's allegations for claim 37 are extensive but do not clearly map the architecture of Magento or Wordpress to this specific internal/external database structure (Compl. ¶¶70-71).
- Intrinsic Evidence for a Broader Interpretation: The patent figures depict the "Interface's Data Base" (360) as part of the build tool and show a separate process for "External Data Base Creation" (30) for the runtime process, which could be interpreted functionally rather than as physically separate systems (’397 Patent, Fig. 3a, Fig. 4b).
- Intrinsic Evidence for a Narrower Interpretation: The claim language recites "an internal database" and "an external database" as distinct limitations. This phrasing may support an argument that two separate and distinct database systems are required, not just different logical views or states of a single underlying database.
The Term: "defined entirely by the objects and the style" (’168 Patent, cl. 1)
- Context and Importance: The word "entirely" creates a very high bar for infringement. Practitioners may focus on this term because if any portion of the final web page is defined by code or templates outside the claimed "objects and style," literal infringement may be difficult to prove.
- Intrinsic Evidence for a Broader Interpretation: A plaintiff could argue that "defined" in this context refers to the user-created aspects of the page—the content and its visual presentation—as this is the focus of the invention's description of the authoring process, rather than the underlying, non-visible platform scaffolding (’168 Patent, col. 2:32-47).
- Intrinsic Evidence for a Narrower Interpretation: The plain meaning of "entirely" is absolute. The specification does not appear to provide a special definition that would weaken this term, potentially supporting a strict interpretation that would be challenging to meet with modern, framework-based content management systems.
VI. Other Allegations
- Indirect Infringement: The complaint does not contain a formal count for indirect infringement. The allegations focus on Defendant's direct infringement through its own use of the accused platforms to build websites (Compl. ¶19, ¶84).
- Willful Infringement: The complaint alleges that Defendant's infringement has been willful since its receipt of a notice letter from Plaintiff on October 30, 2015. This allegation is based on a claim of pre-suit knowledge of the patents and the alleged infringement (Compl. ¶¶72-73, 103-104).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of technological scope: can the term "virtual machine," rooted in the patent’s 1999 filing date and references to Java, be construed broadly enough to read on the standard JavaScript engines embedded in modern web browsers, as the Plaintiff’s infringement theory requires?
- A key evidentiary question will be one of architectural completeness: does the accused functionality of platforms like Magento and WordPress, which rely on complex underlying templates and core code, satisfy the strict requirement of the ’168 patent that a web page be "defined entirely by" user-selected objects and styles?
- A central legal battle will likely concern patent eligibility under 35 U.S.C. § 101. While the complaint highlights a favorable, non-binding finding from another district, the court in this case will have to independently determine whether the claims are directed to a patent-eligible technological improvement in website generation or to the abstract idea of organizing and presenting content using a computer.